On the 1st July 2013 Croatia will become the 28th Member state of the EU. So what does this mean for existing, pending and future Community Trade Marks?
For Community Trade Marks registered before 1st July 2013:
- Immediate extension of the existing protection to Croatia, without any formality or additional cost as from 1st July 2013.
- Your trade mark cannot be challenged because of this accession neither on absolute grounds nor on relative grounds. For example, your trade mark, even if descriptive in the Croatian language, will still be valid. Similarly, a prior similar Croatian trade mark cannot serve as basis to obtain nullity of your mark.
- But the use in Croatia of your trade mark, even if registered before 1st July 2013, could be prohibited by the owner of an earlier national Croatian right, provided this latter was acquired prior to 1st July 2013 in good faith.
In simple terms, this means that an existing Community Trade Mark (CTM) registered prior to 1st July 2013 will be enforceable in the entire EU territory, including Croatia – but not against an earlier conflicting national Croatian registered trade mark.
You do not need to do anything to extend the protection, as it will be automatically extended to include Croatia, however, if you wish to use your trade mark in Croatia, you should search the Croatian register in order to find any earlier national mark that might prevent the use of your mark in this Croatia.
For Community Trade Mark applications filed before 1st July 2013:
- Your trade mark will be examined as previously even if the examination process is still pending after 1st July 2013, meaning that absolute grounds deriving from the accession of Croatia will not be taken into account.
- The holder of an earlier Croatian national mark acquired prior to 1st July 2013 could oppose your community application only if your application has been filed after 1st January 2013 (exceptional opposition rights).
This means that a Community Trade Mark application can only be challenged in Croatia if it has been filed between 1st January 2013 and 1st July 2013 and is similar to a prior Croatian trade mark.
For national Croatian Trade Marks filed prior to 1st July 2013:
- You will be able to prevent the use in Croatia of a registered Community Trade Mark for a similar mark and to oppose a pending application for a CTM filed after 1st January 2013.
- As from 1st July 2013, if you own a Croatian and a Community registration for the same mark covering the same goods and services, you will be entitled to claim seniority of your earlier national mark, meaning that you may then refrain from renewing your national registration.
You should search the Community Trade Mark register to look for possible problems with existing Community Trade Mark registrations and determine if a reaction is necessary.
If you have any questions please contact Jerry Walder.